158 F.3d 693 (2nd Cir. 1998), 97-7430, Matthew Bender & Co., Inc. v. West Pub. Co.

Docket Nº:Docket No. 97-7430.
Citation:158 F.3d 693
Party Name:48 U.S.P.Q.2d 1545 MATTHEW BENDER & COMPANY, INC., Plaintiff-Appellee, Hyperlaw, Inc., Intervenor-Plaintiff-Appellee, v. WEST PUBLISHING CO.; West Publishing Corporation, Defendants-Appellants.
Case Date:November 03, 1998
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 693

158 F.3d 693 (2nd Cir. 1998)

48 U.S.P.Q.2d 1545

MATTHEW BENDER & COMPANY, INC., Plaintiff-Appellee,

Hyperlaw, Inc., Intervenor-Plaintiff-Appellee,


WEST PUBLISHING CO.; West Publishing Corporation,


Docket No. 97-7430.

United States Court of Appeals, Second Circuit

November 3, 1998

Argued March 16, 1998.

Page 694

[Copyrighted Material Omitted]

Page 695

Morgan Chu, Los Angeles, CA (David Nimmer, Elliot Brown, Perry Goldberg, Irell & Manella LLP, on the brief), for Plaintiff-Appellee.

Paul J. Ruskin, Douglaston, NY (Carl J. Hartmann, New York, NY, Lorence L. Kessler, Washington, DC, on the brief), for Intervenor-Plaintiff-Appellee.

Arthur R. Miller, Cambridge, MA (James F. Rittinger, Joshua M. Rubins, Satterlee Stephens Burke & Burke LLP, New York, NY, on the brief), for Defendants-Appellants.

David Seidman, Attorney, United States Department of Justice, Washington, DC (Joel I. Klein, Assistant Attorney General, Lawrence R. Fullerton, Deputy Assistant Attorney General, Robert B. Nicholson, Attorney, United States Department of Justice, on the brief), for Amicus Curiae United States of America.

Before: CARDAMONE and JACOBS, Circuit Judges, and SWEET, [*] District Judge.

Judge SWEET dissents in a separate opinion.

JACOBS, Circuit Judge:

Defendants-appellants West Publishing Co. and West Publishing Corp. (collectively "West") create and publish printed compilations of federal and state judicial opinions. Plaintiff-appellee Matthew Bender & Company, Inc. and intervenor-plaintiff-appellee HyperLaw, Inc. (collectively "plaintiffs") manufacture and market compilations of judicial opinions stored on compact disc-read only memory ("CD-ROM") discs, in which opinions they embed (or intend to embed) citations that show the page location of the particular text in West's printed version of the opinions (so-called "star pagination"). 1 Bender and HyperLaw seek judgment declaring that star pagination will not infringe West's copyrights in its compilations of judicial opinions. West now appeals from a judgment of the United States District Court for the Southern District of New York (Martin, J.), granting summary judgment of noninfringement to Bender and partial summary judgment of noninfringement to HyperLaw. 2

West's primary contention on appeal is that star pagination to West's case reporters allows a user of plaintiffs' CD-ROM discs (by inputting a series of commands) to "perceive" West's copyright-protected arrangement of cases, and that plaintiffs' products (when star pagination is added) are unlawful copies of

Page 696

West's arrangement. We reject West's argument for two reasons:

A. Even if plaintiffs' CD-ROM discs (when equipped with star pagination) amounted to unlawful copies of West's arrangement of cases under the Copyright Act, (i) West has conceded that specification of the initial page of a West case reporter in plaintiffs' products ("parallel citation") is permissible under the fair use doctrine, (ii) West's arrangement may be perceived through parallel citation and thus the plaintiffs may lawfully create a copy of West's arrangement of cases, (iii) the incremental benefit of star pagination is that it allows the reader to perceive West's page breaks within each opinion, which are not protected by its copyright, and (iv) therefore star pagination does not create a "copy" of any protected elements of West's compilations or infringe West's copyrights.

B. In any event, under a proper reading of the Copyright Act, the insertion of star pagination does not amount to infringement of West's arrangement of cases.


West creates "case reports" of judicial opinions by combining (i) certain independently authored features, such as syllabi (which summarize each opinion's general holdings), headnotes (which summarize the specific points of law recited in each opinion), and key numbers (which categorize the points of law into different legal topics and subtopics), with (ii) the text of the opinions, to which West adds parallel citations to other reporters, information about the lawyers, and other miscellaneous enhancements. West then publishes these case reports (first in paperbacked advance sheets, and then in hardbound volumes) in various series of "case reporters." These case reporters are collectively known as West's "National Reporter System," and include (as relevant to this case): the Supreme Court Reporter, which contains all Supreme Court opinions and memorandum decisions; the Federal Reporter, which contains all federal court of appeals opinions designated for publication, as well as tables documenting the disposition of cases that are unpublished; the Federal Rules Decisions and Federal Supplement, which contain selected federal district court opinions; and the New York Supplement, which contains selected New York State case reports. 3 Cases appearing in West's case reporters are universally cited by the volume and page number of the case reporter series in which they appear. One citation guide recommends--and some courts require--citation to the West version of federal appellate and trial court decisions and New York State court decisions. See The Bluebook: A Uniform System of Citation at 165-67, 200-

Page 697

01 (16th ed.1996); see, e.g., Third Cir. R. 28.3(a); Eleventh Cir. R. 28-2(k); see also The University of Chicago Manual of Legal Citation 15 (1989) ("When citing to a state case, indicate the volume and first page of the case for both the official and commercial reporters.").

Bender markets a series of CD-ROM discs 4 called Authority from Matthew Bender. One product in this series--the "New York product"--consists of three elements: (i) "New York Law and Practice" (one disc), which contains New York statutory and treatise materials; (ii) "New York Federal Cases" (three discs), which contains cases from the Second Circuit and New York's federal district courts from 1789 to the present; and (iii) "New York State Cases" (four discs), which contains New York State judicial opinions from 1912 to the present (the New York State Court of Appeals cases begin in 1884). These CD-ROM discs contain published opinions and unpublished opinions and orders from these courts.

Bender obtains the text of the judicial opinions through a license from LEXIS (an on-line database containing legal and non-legal data), and stores the opinions and orders on the discs arranged by court and date, which is also the order in which they would be seen by a user who for some reason browses through the discs without sorting the case reports in a search. For each case that appears in West's case reporters, Bender intends to insert (and in some cases already has inserted) a parallel citation (e.g., 100 F.3d 101) to the West case reporter at the beginning of the opinion and a citation to the successive West page numbers at the points in the opinion where page breaks occur in the West volume (e.g., * 104 or 100 F.3d 104).

Bender uses the FOLIO file-retrieval program, which allows a user to access opinions in several ways, including in the order in which they are stored on the disc, or through term searches, or through a West or LEXIS parallel or page citation. In addition, citations appearing within judicial opinions are "hot linked," so that a user may retrieve the cited case by clicking the mouse on the case citation.

West claims (and for the purposes of this summary judgment motion, we accept as true) that the FOLIO retrieval system permits a user of Bender's product to view (and print) judicial opinions in the same order in which they are printed in a West volume by repeating the following steps: (i) a user activates the jump feature in the program to go to the first page in a West case reporter volume, (ii) pages through to the bottom of the case, (iii) finds the last star pagination reference, and (iv) activates the jump cite feature to retrieve the case beginning on the same or next West page number. 5

Page 698

HyperLaw markets Supreme Court on Disc, an annual CD-ROM disc containing opinions of the United States Supreme Court since 1991, and Federal Appeals on Disc, a quarterly CD-ROM disc containing nearly all opinions (published and unpublished) of the federal courts of appeals since January 1993. 6 HyperLaw currently obtains the text of its opinions directly from the courts and includes in its Federal Appeals CD-ROM disc many more cases than published by West. The opinions are organized on the CD-ROM disc in an order that is "approximately chronological." HyperLaw includes parallel citations to West's case reporters for all cases appearing in the Supreme Court Reporter and the Federal Reporter, and intends to add star pagination as well. 7

Bender's complaint sought a judgment declaring that star pagination to West's case reporters will not copy West's arrangement or infringe West's copyright. HyperLaw intervened seeking the same relief. All parties then moved for summary judgment. The district court granted summary judgment to plaintiffs on the star pagination issue, concluding that the insertion of star pagination to West's volumes on the CD-ROM version of the cases would not reproduce any protectable element of West's compilation. The court noted that "the protection extends only to those aspects of the compilation that embody the original creation of the compiler" and that "where and on what particular pages the text of a court opinion appears does not embody any original creation of the compiler, and therefore ... is not entitled to protection." The court further ruled that star pagination would be permitted under the fair use doctrine even if West's pagination were copyrightable.


West's case reporters are compilations of judicial...

To continue reading